June 2018

06/12/2018

About five months have gone by since my last update on the state of patentable subject matter after the 2014 Alice Supreme Court decision and its progeny. A number of important developments have taken place during this time, mostly positive in the sense of rebalancing the outcomes Alice patentable subject matter inquiries by courts.

The two-part Alice test for patentable subject matter starts by determining whether the claims are directed to a judicially recognized exception; namely, laws of nature, natural phenomena and abstract ideas. If an exception is present, it is then determined whether the elements of each claim both individually and as an ordered combination, are sufficient to transform the nature of the claim into something patentable. In practice, however, the second part of the test is often given short shrift. During the first four months of 2018, the Federal Circuit (federal appeals court for patents) has, in three cases, found the claims of the relevant patents to be patentable subject matter, surviving the two-step Supreme Court Alice test. For comparison, in only two precedential cases (and one non-precedential) did the Federal Circuit find no patentable subject matter. Further, a fourth case found patentable subject matter in some of the disputed claims and in yet another case, the dismissal on abstract idea grounds was vacated and remanded. In addition, two Patent Trial and Appeal Board (PTAB) cases reversed the Examiner’s rejections based on patentable subject matter. Hopefully, this is a trend toward rebalancing Alice test outcomes.